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Likelihood of Confusion Not Relevant Unless Trade Name Qualifies as a Trademark

Although “trade names perform the same ‘origin function’ as trademarks, indicating the source or nature of the business entity they represent, and perform the same investment or advertising function” they are not (or not formally) accorded protection under the UDRP (Second WIPO Report, para. 311). Interjecting “not formally” is meant to emphasize that Panels have (to some extent) lowered the proof demands for protection of unregistered trademarks under common law principles reflecting perhaps the majority of commentators referred to in the Second Report who supported protection of trade names in the DNS “equivalent to that accorded to trademarks.” (id.) Nevertheless, the proof requirements are significant and the evidence for unregistered marks must be given the attention demanded to make a case for standing.

Trade names may be protected as common law trademarks, but only where the complainant offers sufficient proof that the public associates the mark as a source of goods or services. The Complainant in Glasgow Signs v. 1st Signs Limited trading as Sign-A-Rama, D2010-0409 (WIPO May 4, 2010) alleged that it had traded under the name “Glasgow Signs” since 2004. However (the Panel pointed out) “a person claiming rights in a descriptive term must show that the term has acquired a secondary meaning denoting its business.” Thus, although there may be a likelihood of confusion as the Complainant alleges the Panel stops his analysis on standing. The complainant either has trademark rights or it does not. If it does not the UDRP complaint must be dismissed.

WIPO’s recommendation two years into UDRP, “[d]espite the majority opinion that protection should be extended to trade names within the DNS, we do not consider that it is appropriate to modify the UDRP so as to allow complaints for the bad faith and misleading registration and use of trade names as domain names.” Among the reasons, was the following:

The UDRP was designed for, and applies to, straight-forward disputes, where there are rights on one side and no rights or legitimate interests on the other side. It was not designed to accommodate disputes involving interests on both sides…. Many trade name disputes, because of the relatively light burden imposed to establish eligibility for trade name protection, will involve interests on both sides.

In Glasgow Signs, “the Complaint fail[ed] at first base” for the reason that “the Complainant has not provided any specific evidence as to the extent of its use of the descriptive term, ‘Glasgow Signs’ in which it claims rights.” The specific evidence referred to by the Panel that would support unregistered trademark rights includes “the value of [the Complainant’s] sales using the alleged mark or of its expenditure on any advertising or other promotion under the mark. Nor has it disclosed the nature of any advertising or promotion.”There also was “no evidence showing that customers or suppliers of the Complainant have been taught to regard or have come to perceive the term as a brand.”

The Second Report does note in paragraph 320 that “[i]n the case of ccTLDs, we believe that much greater scope exists for allowing complaints under a dispute-resolution procedure for abusive registrations of trade names. Within the ccTLD, the problem of diversity does not exist in the same way and there is greater scope for applying the relevant national implementation of protection of trade names.” Thus, the Australian and New Zealand Policies, for example, protect trade names as well as trademarks. The Panel in Supre Pty Ltd v. Paul King, DAU2004-0006 (WIPO December 22, 2004) explains that “unlike the Uniform Domain Name Dispute Resolution Policy, the .au Domain Name Dispute Resolution Policy prohibits identity or confusing similarity with a ‘name’ as well as with a trade or service mark. ‘Name’ is then defined to include a complainant’s registered company name. So, in the present case, the Respondent has chosen a domain name, which is confusingly similar to the Complainant’s company name.”

Under UDRP, however, Complainant’s use of a trade name, without any showing of secondary meaning associated with it, insufficiently demonstrates that Complainant has rights that support standing to complain about likelihood of confusion.

Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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